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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europay International S.A. .v. Domaines Ltd and Cecilia Ng
Case No. D2000-0513
1. The Parties
The Complainant is Europay International S.A. of Chaussee de Tevuren 198A, B-1410 Waterloo, Belgium.
The Respondent is Domaines Ltd and Cecilia Ng, both of P O Box 243, Sharjah, United Arab Emirates.
2. The Domain Name and Registrar
The domain name at issue is:
and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on May 26, 2000 [electronic version] and on May 29, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is June 8, 2000.
On June 4, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on June 6, 2000 Network Solutions, Inc transmitted by email to the Center Network Solutions, Inc's verification response confirming that the registrant is Domaines Ltd and the contact for both administrative and billing purposes is Cecilia Ng.
Having verified that Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on June 8, 2000, to:
this Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by June 27, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Domaines Ltd / Vanilla Limited
(Att. Cecilia Ng)
P O Box 24323
United Arab Emirates
and by fax to
+1 212 253 4216
No Response was received from the Respondents or either of them by the due date of June 27, 2000. On July 3, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondents using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by Respondents to the Notification of Respondents' Default was received.
Having received on July 11, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was July 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.
4. Factual Background
4.1 The Complainant
4.1.1 The Complainant, Europay International S.A., is an international payment system company. The Complainant offers payment related products and services to European banks. Its products include domestic and cross-border bank cards, credit cards, debit cards and Eurocheques. In 1998, the Complainant states that 200 million cards offered through its system accounted for a 74% market share for debit cards and 60% market share for debit and credit cards (combined) in Europe.
4.1.2 The Complainant states that it provides various of its products and services under and by reference to the marks EUROCARD: E EUROCARD and EUROCARD E. At the end of the third quarter of 1999 almost 60 million EUROCARDS were in use in Europe and there were more than 4.5 million EUROCARD acceptance points in Europe.
4.1.3 Though its longstanding strategic alliance with MasterCard International Incorporated, the Complainant is exclusively responsible for the marketing and transaction processing in Europe for the Cirrusä , MasterCard â and Maestroâ brands. The Eurocardâ / MasterCardâ product is comprised of two brands, the EUROCARD mark owned by the Complainant and the MasterCard mark owned by MasterCard International.
4.1.4 Complainant's services include credit card fraud preventive programs, electronic commerce programs and chip migration services. Complainant maintains a website located at www.europay.com.
4.2 The Respondent
4.2.1 Domaines Ltd, is listed as the registrant of the domain name at issue and Cecilia Ng is listed as the Administrative, Technical Zone and Billing Contact for that domain name. In the absence of a Response information as to the businesses of the Respondents can be derived only from the Complaint.
4.2.2 Complainant exhibits [Exhibits 12 - 14] Network Solutions, Inc printouts showing Cecilia Ng as the Administrative Contact using NIC handles CN948 and CN919 for registrants Domaines Ltd: Vanilla Ltd: Domain Leasing Ltd: Domain Finance Ltd: Universal Artists Ltd: Universal Media Inc: Offshore Information Inc: World Artists Inc: Maritime Artists Ltd: Thames International Inc and others. The Complaint asserts that Cecilia Ng is a known cybersquatter who registers domain names consisting of trademarks owned by others and who has registered over 9,000 domain names under the above registrant names.
4.2.3 By way of example, the Complainant exhibits [Exhibit 12] NIC printouts of domain names registered by Cecilia Ng, none of which are licensed or otherwise authorised by the owners of the trade marks / trade names.
Maritime Artists Ltd
Domaine Sales Ltd
Universal Media Inc
Melbourne University Press
Thames International Inc
4.2.4 By way of further example of the Respondent's alleged cybersquatter activities, the Complainant refers to a 1998 lawsuit brought by Virgin Enterprises Inc against Vanilla Ltd in the US District court for the Southern District of New York concerning registration by Vanilla of 23 domain names incorporating the VIRGIN trademark [Exhibit 15] and to a Decision of The National Arbitration Forum dated March 23, 2000 in which Domain Leasing Ltd was ordered to transfer the domain name in issue [AEROTURBINE.com] to the Complainant, Aeroturbine Inc [Case FA 002000093674].
4.3 The Complainant's Trade Marks
4.3.1 The EUROCARD Mark
The Complainant has provided evidence of its ownership of the word mark EUROCARD in all or some of the following classes for the following goods and services:
9: magnetic cards and micro-circuit cards;
16: financial documents and bank documents: and
36: financial services
in Albania, Andorra, Argentina, Armenia, Austria, Azerbaijan, Belarus, Benelux, Bosnia Herzegovina, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Georgia, Germany, Gibraltar, Greece, Guernsey, Hungary, Iceland, Ireland, Israel, Italy, Jersey, Kazakhstan, Krygyzstan, Latvia, Liechtenstein, Lithuania, Macedonia, Malta, Moldova, Monaco, Norway, Poland, Portugal, Romania, Russian Federation, San Marino, Slovakia, Slovenia, Spain, Sweden, Switzerland, Tajikistan, Turkey, Turkmenistan, Ukraine, United Kingdom, Uzbekistan, Vatican City and Yugoslavia.
The earliest of these registrations is 1964 in the United Kingdom.
4.3.2 The EUROCARD E Mark
The Complainant has provided evidence of its ownership of the word and/or word and device mark EUROCARD E in Class 36 for financial services in the United States of America, Brazil and Sweden. The US registration claims first use in commerce from February 1965.
4.3.3 The E EUROCARD Mark
The Complainant has provided evidence of its ownership of the word mark and/or word and device mark E EUROCARD in all or some of Classes 9, 16 and 36 in Bolivia, Algeria, Argentina, Austria, Bahamas, Barbados, Benelux, Canada, Chile, Colombia, Costa Rica, Croatia, Cuba, Czech Republic, Ecuador, Egypt, Estonia, France, Georgia, Germany, Greece, Guyana, Hungary, Iceland, India, Iran, Ireland, Italy, Jamaica, Japan, Jersey, Kuwait, Latvia, Lebanon, Libya, Liechtenstein, Macedonia, Malta, Mexico, Monaco, Morocco, New Zealand, Norway, Panama, Paraguay, Peru, Philippines, Poland, Ras Al-Khaimah, Romania, Russian Federation, San Marino, Saudi Arabia, Singapore, Slovakia, Slovenia, South Africa, Spain, Thailand, Tunisia, Turkey, Turkish F.S. Cyprus, Ukraine, Uruguay, Venezuela, Vietnam, Yugoslavia and Zaire.
Many of the registrations date from 1973.
4.3.4 Use, promotion and status of the Complainant's EUROCARD Marks
The Complainant asserts that, by reason of its extensive use and promotion, the EUROCARD mark symbolises very significant goodwill identified with the Complainant and that the mark is one of incalculable value. The Complainant further asserts that due to the fame and registration of the EUROCARD marks the Respondents have constructive knowledge of those marks. The Complainant refers to WIPO Case D2000-0173 in which the Panel found that the EUROCARD mark was famous at the time when the domain names in issue in that case were registered.
For the purposes of this Complaint, the Panel finds that the EUROCARD mark is exceptionally well known and that it is inconceivable that the Respondents did not have actual knowledge that in registering the domain name in issue they were infringing the Complainant's EUROCARD marks.
4.4 Disputed Facts
In the absence of a Response, there is no challenge to the facts and evidence asserted by the Complainant. The Panel finds that the evidence presented by the Complainant is admissible, relevant, material and convincing.
5. Parties' Contentions
A. The Complainant
The Complainant contends that the Respondents have registered as a domain name a mark which is identical to or confusingly similar to the Complainant's EUROCARD: EUROCARD E; and E EUROCARD marks, that the Respondents have no rights or legitimate interests in respect of that domain name and the Respondents have registered and are using that domain name in bad faith.
B. The Respondents
No Response has been submitted. Nevertheless, the Complainant must prove each of the requirements of para. 4a of the Policy, namely:
- that the Respondents' domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondents have no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
6. Discussion and Findings
6.1 Identical or Confusingly Similar
The mere use of the plural in the domain name EUROCARDS.com is of no relevance for the purposes of para. 4a(i) of the Policy. The Panel finds that the domain name in issue is to all intents and purposes identical with the Complainant's EUROCARD mark and is confusingly similar to the Complainant's E EUROCARD and EUROCARD E marks. The Complaint satisfies the requirements of para. 4a(i).
6.2 Rights or Legitimate Interests
6.2.1 Para. 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be provided based on its evaluation of all the evidence presented, shall demonstrate the Respondents' rights or legitimate interest for the purposes of para. 4a(ii). There is absolutely no evidence to suggest that the Respondents' activities fall into any of the circumstances set out in para. 4c.
6.2.2 Rather the reverse. For the reasons set out in paragraph 4.3.4 above, it is inconceivable that the Respondents did not know that the representation and warranty given to NSI at the time of registering the domain name in issue [January 1998] were false. Registration of the domain name would plainly infringe upon or otherwise violate the rights of the Complainant, Europay International S.A.
6.2.3 Further, the Complainant has not licensed or otherwise permitted the Respondents to use its EUROCARD marks or to apply for or use any domain name incorporating those marks. The Complaint satisfies the requirements of para. 4a(ii) of the Policy.
6.3 Registered and Used in Bad Faith
6.3.1 Para. 4 of the Policy sets out circumstances which, if found by the Panel to be present, "... shall be evidence of the registration and use of a domain name in bad faith". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Registered in Bad Faith
6.3.2 As to registration in bad faith, the false representation and warranty made in the Registration Agreement [see, paragraph 6.2.2 above] speak for themselves. The Complainant also points to its unanswered cease and desist letter to the Respondents dated August 9, 1999 [Exhibit 17].
6.3.3 The Complaint exhibits [Exhibit 16] the three banner advertisement appearing at the Respondents' under construction website for the domain name in issue.
6.3.4 The Complaint also cites the Panel Decision in WIPO Case D2000-0025 SGS where it was held that setting up a tombstone supposedly not related to the Complainant is evidence of bad faith for the purposes of para. 4b(ii) of the Policy. As to the pattern of conduct required by that provision of the Policy, there is the uncontested evidence of the Respondents' cybersquatter activities [see, paras. 4.2.2 to 4.2.4 above]. The Panel finds the Respondents conduct falls within that contemplated by para. 4b(ii) of the Policy.
Use in Bad Faith
6.3.5 The Panel finds that the Respondents' use of the domain name in issue through the three banner advertisements [see, paragraph 6.3.3 above and Exhibit 16] is an activity falling within para. 4b(iv) of the Policy.
6.3.6 Even if the Panel is incorrect in the foregoing finding, the concept of a domain name being used in bad faith is not limited to positive action. Inaction is within the concept [WIPO Case 2000-0003 Telstra/Nuclear Marshmallows].
6.3.7 Further, generally with regard to the requirements of para. 4a(iii) of the Policy the Panel is entitled to and does draw an inference adverse to the Respondents from their failure to respond to the Complaint. The Panel finds that the Complaint satisfies the requirements of para. 4a(iii) of the Policy.
For all the foregoing reasons the Panel decides that the Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that the registration of the domain name EUROCARDS.com be transferred to the Complainant.
Dated: July 31, 2000